IP agreements in Ukraine
Intellectual property agreements form the commercial and legal backbone of how businesses monetise, share, and safeguard their intangible assets. For international companies operating in or with Ukraine, the quality of an IP contract often determines whether revenue is collected, whether control over technology is preserved, and whether rights can be enforced in a dispute.
ADVANCE PARTNERS provides end-to-end legal support for IP agreements governed by or connected to Ukrainian law. We draft, review, negotiate, and register IP contracts for a wide range of clients, from technology companies and startups to pharmaceutical manufacturers and multinational corporations. Our work combines substantive IP expertise with commercial awareness of how these instruments operate in cross-border transactions.
Types of IP Agreements Under Ukrainian Law
Ukrainian civil law offers a structured set of instruments for managing economic rights to intellectual property. The right choice depends on commercial goals, the nature of the IP object, the level of control the rights holder wishes to retain, and whether the transaction is domestic, cross-border, or part of a larger corporate deal.
Licence Agreement
A licence agreement is one of the most common tools for commercialising intellectual property. Under Article 1109 of the Civil Code of Ukraine, the licensor grants the licensee permission to use an IP object in a specified manner, within a specified territory, for a specified term. Careful drafting of each of these parameters is what separates a licence that generates reliable revenue from one that leaves the rights holder exposed.
Types of Licences
Essential Terms of a Licence Agreement
- Subject matter: clear identification of the IP object and the scope of rights granted
- Type of licence: exclusive, sole, or non-exclusive
- Permitted uses: an exhaustive list of acts the licensee may perform with the object
- Territory: the geographical scope of the licence, which defaults to Ukraine where not specified
- Term: the term is set by the parties. Where the agreement is silent, it is deemed to run for the remaining term of the exclusive economic right but no more than five years (Article 1110(3) of the Civil Code)
- Royalties: the amount, mechanics, and timing of payment, whether as running royalties, a lump sum, or a hybrid
- Sub-licensing: whether the licensee is entitled to grant sub-licences and on what conditions
Special Considerations by IP Object
- Trademarks: mandatory quality-control provisions over the licensee's goods or services
- Publishing agreements: where consideration is a fixed amount, the maximum print run must be specified
- Patents: exposure to compulsory licensing in cases of non-use of the patented invention
Assignment Agreement
An assignment agreement is the instrument by which the rights holder transfers economic rights in an IP object, in whole or in part, to a new owner. Unlike a licence, an assignment is a definitive transfer of title rather than a grant of permission, and it changes who is recorded on the register as the rights holder.
Licence vs. Assignment
Key Points We Focus On
- Authority of the assignor: confirmation that the assignor genuinely holds and is entitled to transfer the rights
- Scope of transfer: precise delimitation of which economic rights are being assigned in full or in part
- Encumbrances: verification of existing licences, security interests, pending disputes, and other restrictions
- Special provisions: fee-top-up obligations on patent assignments within five years of registration
- Recordation: assignments of trademarks, patents, and industrial designs must be recorded with UANIPIO to take effect against third parties and to update the register
Commissioning Agreement
A commissioning agreement (agreement on the creation and use of an IP object) is the instrument under which a creator undertakes to produce an IP object to the client's specification within an agreed timeframe. It is a staple of software development, design studios, advertising agencies, and content production businesses. Done poorly, it leaves the client paying for work it cannot lawfully use.
Structural Features
A commissioning agreement is a mixed contract combining elements of a works contract (creation of the object) with either an assignment or a licence (allocation of rights in the result). Getting the rights-transfer mechanics right is the entire commercial point of the instrument.
- Without a proper written agreement: the author remains the holder of economic rights, even if the client has paid in full
- Commercial risk: the author can block use of the result, demand additional compensation, or transfer rights to competitors
Core Provisions
- Technical specification: a detailed description of the object to be created
- Timeline and milestones: intermediate deadlines and the acceptance procedure for deliverables
- Transfer of rights: clear identification of the moment and scope of transfer of economic rights to the client
- Moral rights: personal non-economic rights (authorship, name) remain with the author as a matter of Ukrainian law
- Warranties: freedom from third-party claims, originality, absence of plagiarism
- Acceptance deed: a written record of delivery and transfer of rights, signed on completion
Franchise Agreement (Commercial Concession)
A franchise agreement, known in Ukrainian civil law as a commercial concession agreement (Article 1115 of the Civil Code), is the instrument under which the rights holder (franchisor) grants a user (franchisee) the right to use a package of rights for a fee, for the purpose of manufacturing or selling goods or providing services.
Subject Matter of a Franchise Package
- Trademarks and business names
- Industrial designs covering product and packaging appearance
- Patented inventions and utility models covering technical solutions
- Trade secrets and know-how
- Business model, operating standards, and quality controls
- Commercial experience and goodwill
Core Commercial Terms
- Scope of rights: the IP objects covered and the permitted modes of use
- Territory: the geographical area in which the franchisee may operate
- Consideration: typically a combination of an upfront fee and ongoing royalties
- Quality standards: obligations to follow prescribed technologies, recipes, and service standards
- Training and support: the franchisor's obligations to train and support franchisee personnel
- Sub-franchising: whether the franchisee may grant sub-concessions
- Control rights: the franchisor's audit and inspection rights over the franchisee's operations
Form and registration: a commercial concession agreement must be concluded in writing (Article 1118 of the Civil Code). Where the package includes trademarks, patents, or industrial designs, the grant of rights in those specific objects is recorded with UANIPIO in accordance with the relevant procedures.
Co-Authorship and Co-Ownership Agreements
A co-authorship agreement governs the relations between persons who have jointly created an IP object through creative work. Although written form is not strictly mandatory, concluding a written agreement is the most reliable way to prevent disputes among co-authors over commercialisation and control.
Issues a Co-Authorship Agreement Addresses
- The manner in which each co-author may use the work
- Decision-making on licensing and assignment of rights
- Distribution of royalties and other remuneration among co-authors
- Procedures for modifications to the work
- Exit of a co-author and transfer of their share
- Dispute-resolution mechanisms between co-authors
Co-Ownership Agreements for Registered IP
Where a trademark, patent, or industrial design is jointly owned, a co-ownership agreement should regulate the commercial and procedural mechanics of shared control:
- Decision-making on licensing and assignments
- Exit procedures and buy-out mechanics
- Right of first refusal on transfers of a share to third parties
- Allocation of income and the cost of maintaining protection
R&D Contracts
An R&D contract (agreement on the performance of research and development or technological work) is the instrument under which the contractor undertakes to perform scientific research, develop a prototype, or create a new technology, while the client undertakes to accept and pay for the work. The IP-allocation provisions are typically the most commercially significant clauses in such contracts.
Key IP Issues in R&D Contracts
- Rights in results: clear allocation of rights in the developments produced under the contract
- Background IP: the scope of use of each party's pre-existing IP
- Interim results: rights in partial deliverables produced at intermediate stages
- Confidentiality: protection of know-how and confidential information exchanged during the project
- Patent filing: identification of the party responsible for filings and cost-bearing
- Publications: procedures and restrictions on scientific publications arising from the work
We regularly structure collaborations with research institutions, engineering teams, and technology partners, and ensure that the IP generated is properly captured, allocated, and defensible.
NDAs and Confidentiality Agreements
A Non-Disclosure Agreement (NDA) is the foundational instrument for protecting confidential information in commercial relationships. A well-drafted NDA enables businesses to share commercial, technical, and financial information with partners, contractors, investors, and employees in a controlled and enforceable manner.
Information Protected by an NDA
Trade secrets and know-how
Technical documentation and source code
Business plans and strategy
Financial information and pricing
Customer databases and marketing data
Unpatented inventions and developments
Core NDA Provisions
- Definition of confidential information: what is, and what is not, covered by the obligation
- Permitted purpose: the specific purpose for which information is disclosed
- Authorised recipients: the persons entitled to access the information
- Prohibited uses: acts that are expressly forbidden
- Duration: the period during which confidentiality obligations apply
- Return or destruction: handling of the information on termination
- Liability: penalties, liquidated damages, and remedies for breach
Non-Compete Agreements (NCAs)
A Non-Compete Agreement restricts an employee or partner from working for competitors or launching a competing business after the relationship ends. In Ukraine, NCAs have limited application to employment relationships due to restrictions under labour law, but they remain effective in commercial and partnership contexts where carefully drafted.
Registration and Recordation of IP Agreements
Certain IP agreements require, or benefit from, registration or recordation to produce full legal effect against third parties and to update the public register.
Our Services
Why Choose ADVANCE PARTNERS
- Dedicated IP focus: our practice is exclusively devoted to intellectual property
- Recognised expertise: recommended by Legal 500, WTR 1000, and IP STARS
- Sector depth: technology, pharmaceuticals, FMCG, media, and manufacturing
- Commercial mindset: we understand the business logic behind IP contracts, not just the legal form
- Cross-border practice: regular work with foreign counterparties, in-house teams, and foreign counsel
- Full-service capability: from drafting through to enforcement and litigation
Frequently Asked Questions
What is the practical difference between a licence and an assignment?
A licence grants permission to use an IP object within defined parameters of time, territory, and scope, with the licensor retaining ownership. An assignment transfers ownership to the assignee, who is then free to deal with the object as they see fit. The choice between them is a fundamental commercial decision, not a technicality.
Is registration of a licence agreement mandatory in Ukraine?
No. Licence agreements are not subject to mandatory registration in Ukraine. Registration is available on an optional basis and can provide additional evidence of the agreement's existence. Assignments of rights in trademarks, patents, and industrial designs, by contrast, require recordation with UANIPIO in order to be effective against third parties and to update the public register.
What happens if our existing contract is silent on IP?
If the contract does not address the transfer of IP rights, the author or developer retains economic rights in the result, even if the client has paid for the work. We recommend concluding a supplementary agreement or a separate assignment to regularise the position as soon as the issue is identified.
Can rights in an IP object that does not yet exist be transferred?
Yes. Ukrainian law permits contracting in respect of future IP objects. The agreement should clearly specify that rights are transferred in the object to be created under the engagement, and an acceptance deed should be executed once the object comes into existence.
Is email or messenger correspondence sufficient to transfer IP rights?
No. Informal correspondence through email or messaging applications does not satisfy the statutory written-form requirement for transfer of economic rights in IP. A signed written agreement is required. Without one, the rights remain with the author, regardless of payment.
How is a royalty rate determined?
Royalty rates depend on industry, the type of IP object, territory, exclusivity, and the commercial potential of the asset. In international practice, rates are typically justified by reference to comparable licensing transactions, the 25-percent-of-licensee-profit method, and industry rules of thumb. We assist clients in structuring and defending a rate that fits their particular sector and deal profile.
How long does recordation of an assignment with UANIPIO take?
Recordation of a trademark or patent assignment with UANIPIO typically takes one to two months, depending on the office's workload and the completeness of the filing package.
What contract package does a technology company typically need?
A standard package usually includes developer agreements (with transfer of rights in code), NDAs with employees and contractors, customer-facing licensing agreements (EULA, SaaS, subscription terms), and content-creation agreements. We offer ready-to-deploy suites, adapted to the client's specific business model.
Can IP agreement work be handled remotely for foreign clients?
Yes. We routinely handle drafting, negotiation, and recordation entirely remotely for international clients, working directly with in-house teams and foreign counsel. All communication, drafting, and filings can be conducted online and through secure correspondence.
Need a licence, NDA, or commissioning agreement?
Looking to review an existing contract for risk exposure? Planning an assignment or franchise rollout? Our IP lawyers will structure the deal to protect your commercial interests and ensure the paperwork stands up in practice.
Request a consultation and we will respond within one business day.
REQUEST A CONSULTATION
Do you need advice on registration, protection or maintenance of intellectual property rights?
Contact our team to discuss your request.
